Design Patents vs. Utility Patents

Clients frequently ask about the differences between a design patent and a utility patent. Though there are several, the primary differences relate to the categories of scope of protection, costs and timing.

As for the scope of protection, design patents cover the ornamental appearance of an invention. Accordingly, the appropriate subject matter for a design patent application may comprise the three-dimensional shape of an article, the two-dimensional surface ornamentation applied to an article, or the combination of both. As suggested in its name, a utility patent covers the utility aspects of an invention. The scope of protection is defined in the written claims. Utility patents typically cover inventions that have some sort of functionality or utility, as opposed to merely an ornamental appearance.

Here's an example to illustrate the difference. Suppose you invent a coffee mug shaped to resemble a piece of cake. You can file a design patent application to cover this configuration. To the extent that the mug contains surface ornamentation, this would also be appropriate subject matter for a design patent application. Now, let's assume that you create a new and unique hinged lid that covers the top of the mug and provides a top flat surface for supporting objects, such as pastries (I love to eat, if you can't tell by now). Since this lid serves a functional, or utilitarian, purpose, it would be appropriate subject matter for a utility patent application.

Utility patent applications are typically more expensive than design patent applications since a substantially greater amount of work is required to prepare a utility application. Depending upon the complexity of the invention, a typical utility patent application can easily run in the 5-figure range (as of 2006).

The term of a design patent is 14 years from the issue date, while the term of a utility patent is 20 years from the filing date. Design patents do not require maintenance fees whereas utility patents do. Since the substantive examination by the PTO is less time consuming for a design patent application, it would not be surprising to obtain an issued design patent within 1 to 2 years from the filing date. As many current patent applicants are painfully aware, utility patent applications can take several years to proceed to issuance. Therefore, a very practical consideration in deciding whether to pursue a utility patent application is the life cycle of the product at issue.